The USPTO recently issued an alert that is very important for trademark attorneys: some foreign applicants are attempting to skirt the bar on non-US applicants and lawyers prosecuting US applications by listing a US lawyer as correspondent, but where the US lawyer actually has nothing to do with the application.
This kind of fraud could impact your practice and reputation. Fortunately, with TM TKO’s Portfolio feature, it’s easy to get notified any time your name is used fraudulently. Anyone using your name fraudulently will want to get notice of USPTO correspondence, so they will use their own email address instead of an email address from your firm.
Click on Portfolios then New Portfolios, and stay in the “Attorney” tab. Give this Portfolio a name, like “Attorney Fraud.” If you are a one-person practice or only checking yourself, add two rules: one for your name as Attorney of Record, and one for the Correspondent Email. Leave only the top three checkboxes selected, as shown below.
If you are tracking your whole firm’s trademark practitioner, you will want want to have a Group of rules for the Attorney Names. Be sure to set the Boolean for that group to “or” and leave only the top three checkboxes selected, as shown below.
You will now be updated once a week, and get prompt knowledge of any fraudulent use of your name.
If you have any questions about setting up this Portfolio, or any other ways to use TM TKO to support your practice, don’t hesitate to reach out at firstname.lastname@example.org.
This blog post takes a statistical look at the foreign equivalents doctrine, and how it influences examination outcomes in 2(d) refusals. In particular, I wanted to compare refusals where the Examining Attorney based the refusal on the foreign equivalents doctrine against Office Actions that did not raise the foreign equivalents doctrine but did emphasize that one or more terms in the mark are synonyms.
I looked at both 2019 and 2018 data, since so many of the 2019 applications have not made their way to a final decision yet.
Foreign equivalents refusals tend to result in a higher rate of refusals than “synonym” refusals. Roughly 10% more applications that had a foreign equivalents issue raised were refused in 2018 vs. “synonym” refusals. On a much smaller data set, the outcomes are much more closely equivalent in 2019, but outcomes are still worse for applications that receive a foreign equivalent refusal.
It’s also interesting that “synonym” refusals are just less common than “foreign equivalent” refusals – foreign equivalent refusals are about 5x more common than “synonym” refusals. Why? From dipping into specific examples, it appears that a decent percentage of the “synonym” refusals are not focused on the shared term in the mark – they’re the Examiner noting that an additional term, often weaker or descriptive, is essentially synonymous and so not sufficient to differentiate the two marks.
To see if I got different results, I restricted the search to only instances where there was a 1-word mark on each side of the refusal. (This is just space-delimited, so I’m sure it pulls in some compound marks, but it’s close enough.) This dropped the data set dramatically, especially for “synonym” refusals.
I expected the abandonment rates to be higher here, since these are one-word to one-word comparison. It was higher, a bit, for foreign equivalents, but perhaps not as much as I expected – maybe the inclusion of articles in some foreign languages tilted the multi-word comparison rates a bit higher. On the “synonym” refusals, these were if anything overcome at a higher rate than multi-word terms, supporting the hypothesis above that synonym-related refusals are most likely to matter when it is a tacked-on, secondary word (like MVD ANALYSIS vs MVD ASSAY) that is the synonym than a synonym-based comparison of the strongest term in a mark (like BOBCAT vs. LYNX).
Don’t forget to take advantage of TM TKO’s full set of indexed, text-searchable USPTO trademark prosecution histories to find comparable refusals – and successful responses! – for your Office Actions, whether you are facing issues related to foreign equivalents, synonyms, or any other prosecution hurdles.
I am from Auburn, AL, a college town and home of Auburn University, and one thing that has always amused me since becoming a trademark lawyer is how much the University’s “Tigers” branding has suffused the community. From the Tiger Rags clothing store to the Tiger Tire & Auto repair shop to the Tiger Town mall in next-door Opelika, “Tiger” branding feels like it is everywhere.
Just for fun, I used TM TKO’s new business listing data to do a bit of research on the commonality of team nicknames in local company names in the combined statistical areas (CSAs, geographic regions set up by the Office of Management and Budget) near the university. A completely random assortment of schools and names:
Badgers near Madison: 200+ Bruins in LA: 590+ Buckeyes near Columbus: 500+ Bulldogs (or Dawgs) near Athens/Atlanta: 150+ Crimson in Boston: 20+ Huskies in Seattle: 20 Tigers near Auburn: 40+ Volunteers (or Vols) near Knoxville: 200+ Wolverines near Ann Arbor/Detroit: 140+
To do this sort of research, just go to the manual search tool and the Business Listing section.
TM TKO is happy to announce that we are in the process of incorporating common-law business entity data into the TM TKO platform. How will we make use of this new data set?
The first place you will see this is in manual search, the Search option in your top menu. The “Business Listing” tab lets you search by a variety of fields, including a wide range of name search options, geographical options (including state and regional CSA data), SIC codes, and the International Class equivalents of common SIC codes. How can you use this?
This is immediately a valuable adjunct to your clearance efforts. Just plug in a key term from your mark, limit to an international class (and/or its coordinated classes), and you’re off and running with additional results.
In an Office Action Response or TTAB proceeding, evidence of common-law co-existence can be extremely valuable. For instance, the Federal Circuit strongly emphasized the importance of common-law uses of the term “Blue Moon” in the food and restaurant space. In re Coors Brewing, Co., 343 F.3d 1340, 68 USPQ2d 1059, 1061 (Fed. Cir. 2003). Let’s create a quick search to identify this sort of data.
You can quickly identify nearly 200 “Blue Moon” marks in the space, from restaurants to liquor stores and more. You’ll get both a chart with selectable data records, and the ability to pop open further details about the business, like its approximate age, sales, employees, and website, if available. The following screenshot provides an example.
The business listing data will be incorporated into knockout search results next, providing additional depth in the reports and, later, additional details about entities that own trademark registrations that appear in the reports.
Keep an eye out for new products coming out this winter that will incorporate common-law data! We can’t spill the beans yet, but we’re very excited about the potential they have to change the way to practice.
Section 2(a) of the Lanham Act lays out five grounds for refusal if it contains matter that is (1) immoral, (2) deceptive, or (3) scandalous, or (4) that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or (5) is a geographical indication used for wines or spirits that identifies a place other than the origin of the goods and is first used after the WTO Agreement entered into force in the US.
The disparagement section was struck down on Constitutional grounds in Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017); the immoral and scandalous sections came to the same end via Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019). What remains? The prohibitions on deceptive marks, false suggestion, and geographic indications.
By far the most common type of 2(a) refusal now is for potentially deceptive marks, which have generated over 3,000 refusals in 2019. This refusal is often raised in the alternative to a 2(e)(1) refusal, and so is piggybacking on a much more common refusal a bit.
Immoral or scandalous marks each have around 300 refusals, largely suspension notices issued early in the year; these are starting to move forward to publication after the recent Brunetti decision. Most applications that received disparagement refusals have moved through to publication or registration or will do so shortly.
There were about 550 false suggestion refusals; about 1/5th of them have already gone abandoned, and a roughly equal number have moved through to publication or registration. These refusals appear to be especially common in the fashion space.
Finally, geographic indication-based refusals were extremely rare; there were only a handful and 2/3 have already moved through to publication or registration.
You may have noticed that ThorCheck reports now include visualizations of the search data.
What are the numbers?
There are three graphs. The first has raw counts on how common the two sets of goods (beer vs. pretzels) are, and how much overlap they had (both sets of goods in a single registration). The second gives you counts of how many identical and highly similar marks with different owners there are, and the third gives you counts of how many identical and highly similar marks with the same owners there are, whether in a single registration certificate or different certificates.
How can you use the numbers?
The charts give you a high-level view of the extent of overlap (or lack thereof) between two sets of marks or two sets of goods or services. You can do a quick look to see if you have a reasonable set of arguments, or if the arguments you want to make are outweighed by the .
The table below the graphical analysis section contains all the comparative research examples that you’ve come to expect. In the screenshot below, you’ll see the first three marks are identical, matching the “3” as “Exact” in the “Dissimilarity” section, and then the similar-but-not-identical mark comparisons start, like KEYSTONE LIGHT (disclaiming “light”) vs KEYSTONE PRETZELS (disclaiming “pretzels”). These are the examples that you will use to support your arguments, and the evidence you will provide your Examiner or the Board.
By mixing the context that the charts provide with the anecdotal evidence from the table, you can build your strongest Office Action Response or dispute arguments, and help your clients succeed.
Class-Based and Keyword-Driven Comparative Research
ThorCheck is a great, unique tool for comparative research.
The first iteration, and still the most commonly-used, helps you identify
active, use-based registrations for the same mark for two different sets of
goods, e.g. trailers and trucks. In re
Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). It saves hours or even days
of manual research, and has helped hundreds of applicants prevail over
difficult related-goods refusals.
The original ThorCheck Goods and Services tool is still your
best option for most goods/services comparative research, but was less adept at
two kinds of searching.
The first was for class based comparisons – finding overlap between, say, a food in Class 29 or beverage in Class 32 and a restaurant service in Class 43, or between a pharmaceutical in Class 10 and a medical service provider in Class 44. Any evidence of that type of overlap is potentially valuable, and ThorCheck’s emphasis on individual goods or services didn’t allow for easy “general” comparisons like this.
The second was for highly varied goods and services, like software – give the same description of a hospital-focused SAAS to ten different trademark lawyers, you’ll get ten different descriptions of services.
The new Custom option solves both sets of problems.
Setting up a custom search is easy – just pick one class in
First Party Trademark Criteria and the other in Second Party Trademark
Criteria. As always with ThorCheck, your results are limited to active,
Exporting a summary chart and TSDR status and title copies
is as easy as always; just tag relevant results and export to Word or Excel, or
select up to 100 records to get TSDR status and title copies at a go.
What if you’re the senior party, and want evidence that
cosmetics are related to more industrial chemicals? Just pick Class 1 and 3
respectively, and change the Evidence option to “Similarity,” as shown below.
Keyword-Driven Goods and Services Comparisons
Custom goods and services ThorCheck search strategies look a little more complicated, but they are conceptually simple: come up with two sets of search strategies that identify either different (Dissimilarity option) or overlapping (Similarity option) universes of marks. ThorCheck will put all the pieces together, lining up identical marks with either different owners (Dissimilarity option) or identical owners (Similarity option).
Let’s do an example. Say your client offers industrial software for running oil, gas, and mining operations. A prior registration for software in the HR space has been cited as a bar to registration, with the Examining Attorney taking the position that part of running industrial operations is dealing with HR issues. You plan to argue channels of trade and that the users of the software are different, but would love to have evidence to attack the relatedness of the goods directly. ThorCheck can provide it. We want to limit both First Party and Second Party criteria to Class 9 and 42. On the First Party Criteria, we want to pair software-related keywords with keywords like mining, oil, gas, and industrial. One the Second Party Criteria, we want to pair those same software keywords with either the phrase “human resources” or the term “HR.” The search strategy looks like this:
The results speak for themselves – dozens of examples of just this sort of overlap. A sampling of the representative results are attached, and it’s only a fraction of the evidence surfaced by ThorCheck. (The Word formatting doesn’t carry over to the blog great, so some details have been truncated for readability.)
Illinois Tool Works Inc.
009 business management software, namely, project management software for truss fabrication projects in the business component industry
HOMEBASE Reg: 2803070
HOMEBASE Reg: 4694369
009 042 software for human resources and labor management for employee communications, scheduling, task management, payroll, hiring, accounting, alerts, messaging, compliance, timesheets, reviews and feedback (…)
Pioneer Works, Inc.
Epicor Software Corporation
009 computer software for use in the made-to-order or custom manufacturing industry (…)
VISTA Reg: 2895370
VISTA Reg: 5387674
009 computer software for use in human resource management, in maintaining personnel and benefits records, and in processing payrolls
Personnel Data Systems, Inc. DBA PDS
037 042 technical support services, namely, troubleshooting of industrial process control computer software problems; installation of computer software for industrial process control systems
SMARTSTART Reg: 3544081
SMARTSTART Reg: 4969661
038 042 (…) application service provider (…) in the fields of (…) human resources, (…)
Smartstory Technologies, Inc.
009 computer interface units and computer programs for use with gas or liquid flow measurement apparatus (…)
TSI Reg: 3651680
TSI Reg: 4096817
009 041 educational computer programs (…) used to teach persons (…) human resources (…)
Advanced Digital Data, Inc.
009 business management software that allows customers (…) to check their account status (…) in the petroleum products industry
SMARTCONNECT Reg: 3124058
SMARTCONNECT Reg: 5770389
042 provision of cloud computing (…) services (…) in the fields of payroll, tax, compliance, human resources (…)
Carrier Logistics Inc.
009 computer software for freight management in the transportation industry
FACTS Reg: 3074116
FACTS Reg: 5645276
042 (…) on-line non-downloadable software that allows consumers to manage human resources information, (…)
Please enjoy our new class-based and keyword-based research options in ThorCheck, and keep the success stories coming! We love to hear how ThorCheck has helped your practice. Also, please tell your fellow trademark attorneys – word of mouth recommendations mean a lot to us.